1. law, govt and politics

8 OKLA. J.L. & Tech. 58 (2012)
www.okjolt.org
LOUBOUTIN’S TRADEMARK SUIT AGAINST
YVES SAINT LAURENT: CREATING A COLOR WAR IN THE FASHION INDUSTRY
© 2012 Nicollette Brandt
I. Introduction
In 1992 French designer Christian Louboutin unveiled his now signature red-soled
women’s shoes. His deviation from the industry custom of black or beige outsoles was meant to
give his line of shoes energy and sex appeal, and he used the red sole on every pair of his shoes
exclusively for over nineteen years. Widespread recognition of Louboutin’s designs created an
undeniable association between red-soled shoes and the luxurious Christian Louboutin brand.
From Jennifer Lopez’s immortalization of Louboutin shoes in the 2009 song “Louboutins,” to
Barbie’s acquisition of doll-sized Louboutin heels, these red-soled shoes have permeated pop
culture and made Christian Louboutin a household name.
In January 2008, Christian Louboutin S.A., Christian Louboutin L.L.C., and Christian
Louboutin (hereinafter referred to as “Louboutin”) obtained trademark protection for the now
infamous “Red-Sole Mark” from the United States Patent and Trademark Office. The certificate
of registration claimed protection over “the color(s) red…” and “…a lacquered red-sole on
footwear.”1 After years of use in commerce, secondary meaning had been established and
trademark protection of the “Red-Sole Mark” was granted.2 Competitors attempted to duplicate
Louboutin’s red-soled shoes, but Louboutin actively policed the “Red-Sole Mark” to shut down
1
Christian Louboutin S.A. v. Yves St. Laurent Am., Inc., 778 F. Supp. 2d 445, 448-49 (S.D.N.Y. 2011).
Secondary meaning occurs when “in the minds of the public, the primary significance of a [mark] is to identify the
source of the product rather than the product itself.” Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 114 (1938).
2
copyists.3 In April 2011, after urging fellow designer Yves Saint Laurent (hereinafter referred to
as “YSL”) to discontinue his production of red-soled shoes, specifically the Tribute, Tribtoo,
Palais, and Woodstock models in YSL’s Cruise 2011 Collection, each bearing a bright red sole
as part of a monochromatic design, Louboutin filed a trademark infringement suit against YSL
asserting multiple claims under the Lanham Act and requesting a preliminary injunction.4,5 YSL
responded with several counterclaims, including a request for cancellation of the “Red-Sole
Mark.”6
In August 2011, the United States District Court for the Southern District of New York
decided that the designer was not entitled to a preliminary injunction to enjoin Yves Saint
Laurent from using a red outsole on its own shoe design.7 Although Louboutin presented
substantial evidence that consumer confusion and irreparable harm were likely to occur, the court
ruled that Louboutin could not demonstrate a sufficient likelihood that the “Red Sole Mark”
merited protection, and refused to consider the customary elements for a preliminary injunction.8
In ruling that Louboutin’s “Red-Sole Mark” did not merit protection under the Lanham Act, the
district court made it clear that it believed Louboutin’s “Red-Sole Mark” was ornamental and
3
Plaintiffs’ Reply Memorandum of Law in Support of Application for a Preliminary Injunction at 6, Christian
Louboutin S.A., 778 F. Supp. 2d 445 (No. 11 Civ. 2381 (VM)) [hereinafter Plaintiffs’ Reply Memorandum of Law];
Christian Louboutin S.A., 778 F. Supp. 2d at 447.
4
The Lanham Act is the federal statute that governs trademarks, service marks, and unfair competition. The Lanham
Act covers matters that include the procedures for federally registering trademarks, guidelines for when owners of
trademarks may be entitled to federal judicial protection against infringement, and other directives and remedies for
trademark owners. 15 U.S.C. §§ 1051-1141 (2006).
5
Louboutin asserted claims under the Lanham Act for (1) trademark infringement and counterfeiting, (2) false
designation of origin and unfair competition and (3) trademark dilution, as well as state law claims for (4) trademark
infringement, (5) trademark dilution, (6) unfair competition and (7) unlawful deceptive acts and practices. Louboutin
also sought a preliminary injunction preventing YSL from marketing during the pendency of this action any shoes
that use the same or a confusingly similar shade of red as that protected by the Red Sole Mark. Christian Louboutin
S.A., 778 F. Supp. 2d at 449.
6
Id. YSL asserted counterclaims seeking (1) cancellation of the Red Sole Mark on the grounds that it is (a) not
distinctive, (b) ornamental, (c) functional, and (d) was secured by fraud on the PTO, as well as (2) damages for (a)
tortuous interference with business relations and (b) unfair competition.
7
Id. at 458
8
Id. at 457.
2
functional and, if the issue of trademark cancellation had been decided, Louboutin’s “Red-Sole
Mark” would have been cancelled as well. 9 Louboutin swiftly appealed the district court’s
decision and the case is currently pending before the United States Court of Appeals for the
Second Circuit, to be reviewed de novo. For the time being, however, the New York District
Court’s decision not to grant a preliminary injunction has left YSL and other shoemakers free to
dilute the market with red-soled shoes, leaving Louboutin’s trademark and business vulnerable.
An analysis of the decision reveals that the district court erred in its evaluation of Louboutin’s
“Red-Sole Mark” by ignoring both the Lanham Act and controlling precedent in trademark law.
II. The Lanham Act and the “Color Cases”
The Lanham Act is the federal statute governing trademark law in the United States.10
This comprehensive legislation sets forth procedures for the federal registration of trademarks
and the rights and remedies of trademark owners. By preventing competitors from copying
source identifying marks, trademark law assures consumers that an item with a specific mark is
made by the same producer as other similarly marked items, ensuring that consumers get the
quality of products they expect from the source they expect.11 The Lanham Act also ensures that
trademark owners, rather than an imitating competitor, reap the financial benefits associated with
their desirable product and their company’s good will.12
According to the Lanham Act, a trademark, commonly referred to as a “mark” prior to
registration, is any word, name, symbol, or device used by a person to identify and distinguish
their goods from those manufactured or sold by others and to indicate the source of the product
9
Id.
15 U.S.C. §§ 1051-1141 (2006).
11
For example, the red sole on every pair of Louboutin shoes identifies them in the mind of consumers as a part of
the Louboutin brand, ensuring the quality of the shoes based on the brand’s reputation for quality.
12
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995).
10
3
to consumers.13 The Lanham Act permits the registration of an unregistered mark if it has
become distinctive of the applicant's goods in commerce.14 In order to register a mark, the
applicant must make a prima facie showing that (1) the mark has become distinctive, as used on
or in connection with the applicant's goods in commerce and (2) the applicant’s use of the mark
was substantially exclusive and continuous in commerce for the five years.15 This allows
businesses that have exclusively and continuously used a mark in commerce for at least five
years to obtain trademark protection based on the consumers’ connection between the mark and
the source. If the applicant is able to present prima facie evidence of the mark’s distinctiveness
as well as exclusive and continuous use for five years, the mark will be accepted for registration.
After registration of a trademark, a certificate of registration on the principal register
serves as prima facie evidence of the validity of that trademark, the validity of the registration of
the mark, the registrant's ownership of the mark, and the registrant's exclusive right to use the
mark in commerce.16 While registration of a trademark does not preclude competitors from
proving a legal or equitable defect, it does create a strong presumption that the trademark is valid
because of the rigorous process the trademark application must go through during registration.17
The presumption of validity puts the burden of proving that the trademark registration is
somehow defective on the alleging party. If a trademark owner alleges infringement of a
registered mark, fair use can be asserted by the infringer as a defense if the mark was used fairly
and in good faith.18
13
15 U.S.C. § 1127.
A mark shall be deemed to be in "use in commerce" on goods when the mark is placed on the goods and the goods
are sold or transported in commerce. Id.
15
Id. §§ 1052(f) , 1127. The Principal Register is the primary register of trademarks maintained by the United States
Patent and Trademark Office. It is governed by Subchapter I of the Lanham Act.
16
Id. § 1057(b).
17
Id. § 1115(a).
18
Id. § 1115(b)(4).
14
4
The Lanham Act permits trademark registration of color when it is part of the design
feature of a product. Color alone can meet the legal requirements for a trademark if it ‘‘acts as a
symbol that distinguishes a firm’s goods and identifies its source, without serving any other
significant function.’’19 A color may also be protected as a trademark where that color has
attained (1) secondary meaning and is (2) nonfunctional.20 Secondary meaning occurs when, in
the minds of consumers, “the primary significance of a mark is to identify the source of the
product rather than the product itself.”21 When consumers are able to identify and connect a
single source to a product based on the color mark used, that trademark becomes analogous to
that brand, and secondary meaning is established. For example, the jewelry store Tiffany, L.L.C.
and Tiffany and Company (hereinafter referred to as Tiffany), has used a signature blue color on
merchandise, jewelry boxes, and shopping bags since 1837.22 When consumers see that
particular shade of blue on those items, they are able to immediately identify the Tiffany brand.
That particular color mark has become so recognizable that it is often referred to as Tiffany
blue.23 Consumers are able to make a connection between Tiffany’s signature color mark and the
company’s quality and prestige, giving that color secondary meaning to the public.
A color is functional if it is “essential to the use or purpose of the product” or if it “affects
the cost or quality of the product.”24 A design feature, like color, is essential to the use or
purpose of the product only if the feature is “dictated by the functions to be performed,” meaning
that it is essential to the functional use and performance of the product.25 A design feature
affecting the cost or quality of an article is one which “permits the article to be manufactured at a
19
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 (1995).
Id. at 163; Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006).
21
Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 114 (1938).
22
Tiffany Blue: A Color of Distinction, TIFFANY & CO.,
http://press.tiffany.com/ViewBackgrounder.aspx?backgrounderId=6 (last accessed May 19, 2012).
23
Id.
24
Qualitex Co., 514 U.S. at 165.
25
LeSportsac, Inc. v. KMart Corp., 754 F.2d 71, 76 (2d Cir. 1985).
20
5
lower cost or constitutes an improvement in the operation of the goods.”26 Design features that
reduce the cost of manufacturing or improve the functional use of the product are more desirable,
and are not protected from fair use by competitors because of their functional benefits.
Finally, a color is deemed aesthetically functional when it is “an ornamental feature and
trademark protection would significantly hinder competition by limiting the range of adequate
alternative designs.”27 In the case of Tiffany, it created and utilized a widely-known single color
trademark – robin’s-egg blue.28 This trademark has been officially recognized and protected by
the United States Patent and Trademark Office.29 Tiffany’s signature blue color is not
aesthetically functional because competitors have a wide range of alternative designs at their
disposal and are not limited creatively because of Tiffany’s trademark. Consequently, the
particular color of blue utilized by Tiffany’s can be afforded trademark protection. As will be
discussed below, Louboutin’s “Red-Sole Mark” has likewise achieved secondary meaning and is
not aesthetically functional, and should therefore be afforded trademark protection.
III. Defending the “Red-Sole Mark”
Louboutin’s trademark claims included federal claims for trademark infringement,
counterfeiting, false designation of origin, unfair competition, and trademark dilution.30 It also
alleged state claims for trademark infringement, trademark dilution, unfair competition, and
unlawful deceptive acts and practices.31 To succeed on claims for trademark infringement and
unfair competition under the Lanham Act, Louboutin needed to demonstrate that (1) its “RedSole Mark” merited protection and (2) YSL’s use of the same or a sufficiently similar mark was
26
Id.
Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 81 (2d Cir. 1990).
28
Tiffany Blue: A Color of Distinction, supra note 22.
29
Id.
30
Christian Louboutin S.A. v. Yves St. Laurent Am., Inc., 778 F. Supp. 2d 445, 449 (S.D.N.Y. 2011).
31
Id.
27
6
likely to cause consumer confusion as to the original sponsorship of YSL’s red-soled shoes.32
When a party holds a certificate of registration for a mark from the United States Patent and
Trademark Office, as Louboutin does for its “Red-Sole Mark,” that registration constitutes prima
facie evidence of the registration, validity, ownership, and exclusive rights to use the mark in
commerce.33 Louboutin’s registration constituted prima facie evidence that the “Red-Sole Mark”
was valid and therefore merited protection, leaving the burden of proof on YSL to rebut the
presumption of validity.34 Along with the presumption of validity, Louboutin would have also
been able to provide proof of the likelihood of confusion due to the prominence of the “Red-Sole
Mark,” the proximity of Louboutin and YSL’s goods in the marketplace, the similarity of the
high end red-soled shoes, as well as survey evidence showing actual confusion by consumers.35
Based on these factors, Louboutin had a strong case for trademark infringement against YSL.
However, Louboutin’s infringement suit against YSL was halted by the Southern District Court
of New York.36
In anticipation of protracted litigation, Louboutin filed a motion seeking a preliminary
injunction to prevent YSL’s continued production of red-soled shoes.37 To prevail on the motion
for a preliminary injunction, Louboutin needed to establish ‘‘(1) irreparable harm and (2) either
(a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits
of its claims to make them fair ground for litigation, plus a balance of the hardships tipping
decidedly in favor of the moving party.’’38 However, the district court failed to consider these
factors, instead finding that Louboutin’s trademark was invalid after adopting an unprecedented
32
Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir. 1999).
15 U.S.C. § 1115(a) (2006).
34
Lane Capital Mgmt., Inc., 192 F.3d at 345.
35
Plaintiffs’ Reply Memorandum of Law, supra note 3, at 3; see Christian Louboutin S.A., 778 F. Supp. 2d at 451.
36
Christian Louboutin S.A., 778 F. Supp. 2d at 447.
37
Id.
38
Monserrate v. N.Y. State Senate, 599 F.3d 148, 154 (2d Cir. 2010).
33
7
per se rule against trademark protection of a single color used in any “fashion item,” even where
the color had achieved secondary meaning and was associated with a single brand.39
A. Threat of Irreparable Harm
Louboutin argued that the threat of irreparable harm to its goodwill and ultimate future as
a business clearly outweighed the potential economic harm to YSL.40 Issuing the preliminary
injunction to protect the “Red-Sole Mark” would have kept it safe from use by third party
competitors, ensured the protection of Louboutin’s goodwill pending litigation, and would have
only minimally affected YSL.41 Louboutin maintained that if a preliminary injunction was not
issued, the company would likely lose control over the “Red-Sole Mark,” resulting in damage to
the company’s goodwill, market prominence, fame, and ultimately threatening its entire
business.42 According to the Second Circuit, “[h]arm to the plaintiff’s property interest has often
been characterized as irreparable in light of possible market confusion,”43 and the production and
sale of red-soled shoes by high end competitors and even mid-range companies would
undoubtedly cause substantial consumer confusion. The dilution of the mark, loss of goodwill,
and inability to control the brand reputation that would result from red-soled imitations flooding
the market demonstrate a clear threat of irreparable harm.44 The failure of the district court to
enjoin YSL and other competitors from using the “Red-Sole Mark” could result in a windfall for
competitors at the price of Louboutin’s business by creating substantial market confusion. When
balancing the hardships of the parties, Louboutin’s mark is clearly in need of protection based on
the substantial risk of harm that could result from lack of procedural safeguards. The district
39
Christian Louboutin S.A., 778 F. Supp. 2d at 457.
Plaintiffs’ Reply Memorandum of Law, supra note 3, at 6; Christian Louboutin S.A., 778 F. Supp. 2d at 450.
41
Monserrate, 599 F.3d at 154.
42
Plaintiffs’ Reply Memorandum of Law, supra note 3, at 6.
43
Salinger v. Colting, 607 F.3d 68, 81 (2d Cir. 2010).
44
N.Y. City Triathlon, L.L.C. v. NYC Triathlon Club, 704 F. Supp. 2d 305, 325 (S.D.N.Y. 2010).
40
8
court made no substantial effort to balance the hardships of the parties and barely considered the
prodigious effect that denying the preliminary injunction could have on Louboutin’s business.
B. Likelihood of Success on the Merits
Louboutin presented substantial evidence of its likelihood of success on the merits of the
trademark infringement case. Louboutin’s registration of the “Red-Sole Mark” with the United
States Patent and Trademark Office constitutes prima facie evidence of the registration, validity,
ownership, and exclusive rights to use the mark in commerce.45 Because the “Red-Sole Mark” is
a federally registered mark, there is also a presumption that it is inherently distinctive.46 The
“Red-Sole Mark” has strong secondary meaning due to substantially exclusive use over nineteen
years, extensive media coverage, advertising, market success, and consumer survey evidence.47
Louboutin was also able to prove that, in the minds of the public, the primary significance of the
“Red-Sole Mark” was to identify the Louboutin brand as the source of the shoes.48 Even YSL
conceded “a strong association, between red-soles and Louboutin,” and that the red-sole is the
signature of the Louboutin brand.49
C. Functionality
The “Red-Sole Mark” has no utilitarian functionality because the red sole is merely a
source identifier. A color is functional if it “is essential to the use or purpose of the product” or if
it “affects the cost or quality of the product.”50 A design feature is essential to the use or purpose
of the product only if the feature is “dictated by the functions to be performed;” a feature that
45
15 U.S.C. § 1115(a) (2006).
Id. § 1057(b).
47
Plaintiffs’ Reply Memorandum of Law, supra note 3, at 1.
48
Id. at 6; Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 114 (1938).
49
Defendants/Counterclaim-Plaintiffs’ Memorandum of Law in Opposition to Motion for Preliminary Injunction at
14, Christian Louboutin S.A., 778 F. Supp. 2d 445 (No. 11 Civ. 2381 (VM)); Christian Louboutin S.A. 778 F. Supp.
2d at 448.
50
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).
46
9
merely accommodates a useful function is not enough.51 The district court failed to analyze
functionality; specifically, it failed to evaluate whether the “Red-Sole Mark” was essential to the
use and purpose of Louboutin’s shoes. If the court had examined the issue, it is unlikely that it
would have found the color essential, as a shoe serves the same function regardless of the color
of its sole. Instead, the district court adopted the rule that the use of a “single color” for “fashion
items” is per se essential to the use and purpose of fashion items, and thus, is per se functional.52
It further concluded that color in general is a “critical attribute” and an “indispensible medium”
in the fashion world and the law cannot exclude the “use of an ornamental or functional medium
necessary for the freest and most productive artistic expression by all engaged in the same
enterprise.”53
The district court also failed to properly analyze how the “Red-Sole Mark” affected the
cost of the product, and completely ignored how it affected the quality. “A design feature
affecting the cost or quality of an article is one which permits the article to be manufactured at a
lower cost or constitutes an improvement in the operation of the goods.”54 Instead, the district
court concluded that the “Red-Sole Mark” affected the cost of the shoe because adding the red
lacquered finish to the plain leather sole made the production of the shoe more expensive.55
Increased expense should have indicated to the court that the design feature, the color red, is not
a functional element necessary for fair competition, but rather a costly and unnecessary feature.
Again, the district court failed to apply the correct legal standards to determine utilitarian
51
LeSportsac, Inc. v. KMart Corp., 754 F.2d 71, 76 (2d Cir. 1985).
Christian Louboutin S.A., 778 F. Supp. 2d at 452-53.
53
Id.
54
Qualitex Co., 514 U.S. at 165.
55
Christian Louboutin S.A., 778 F. Supp. 2d at 454.
52
10
functionality of the “Red-Sole Mark” and instead adopted the rule that the use of a single color
as a trademark on fashion items is per se functional.56
Additionally, the “Red-Sole Mark” is not aesthetically functional because there is no
evidence that YSL needed to copy Louboutin’s design to compete in the relevant market. The
“Red-Sole Mark” does not prevent competitors from using other colors on their products,
including other shades of red, nor does it hinder competition because the red sole provides no
functional advantage. The Second Circuit has adopted a clear test to determine when a
characteristic that is aesthetically functional should be denied protection. Specifically, there is no
trademark protection “where an ornamental feature is claimed as a trademark and trademark
protection would significantly hinder competition by limiting the range of adequate alternative
designs.”57 Louboutin’s red sole design feature was not necessary for “effective competition” in
the market where there are endless color and style alternatives YSL could have utilized instead
of copying Louboutin’s trademarked design.58 The “Red-Sole Mark” protects a specific red
outsole, but does not keep competitors from using a broad spectrum of colors on their outsoles,
or even Louboutin’s red color on other parts of the shoe.59 However, the district court failed to
analyze the “Red-Sole Mark’s” aesthetic functionality and instead relied on sweeping
generalities about the fashion industry. The court concluded that the use of a single color in
fashion is per se aesthetically functional because protection of a single color would “cramp what
other designers could do” in an industry that is “susceptible to taste, to idiosyncrasies and whims
and moods, both of designers and consumers.”60 The court’s failure to apply the correct legal
standard to determine the aesthetic functionality of the “Red-Sole Mark” by instead adopting a
56
Id.
Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 81 (2d Cir. 1990).
58
Villeroy & Boch Keramische Werke K.G v. THC Sys., Inc., 999 F.2d 619, 621 (2d Cir. 1993).
59
Plaintiffs’ Reply Memorandum of Law, supra note 3, at 4.
60
Christian Louboutin S.A., 778 F. Supp. 2d at 454.
57
11
rule that the use of a single color as a trademark on fashion items is per se aesthetically
functional is inconsistent with both the Lanham Act and trademark jurisprudence.
D. Likelihood of Confusion
Louboutin demonstrated a strong likelihood of confusion due to the strength of the “RedSole Mark,” the proximity of Louboutin and YSL’s products, and the similarity of the high-end
designer shoes. The “Red-Sole Mark” is strong and prominent in the market, both Louboutin and
YSL produce high end fashion footwear, and YSL used the identical color as Louboutin on its
infringing shoes, creating the likelihood that both point-of-sale and post-sale confusion will
occur. Consumers shopping in stores or seeing red-soled shoes worn by others could mistake the
YSL shoes for Louboutin, knowing that Louboutin shoes always have been the only shoe with
red soles. In support of this contention, Louboutin demonstrated actual confusion by consumers
with undisputed survey evidence from Klein Research. The survey found a high likelihood of
confusion among respondents: 47.1% thought a YSL shoe with a red outsole came from
Louboutin and 96% of those respondents said the red sole showed it was a Louboutin shoe,
proving actual confusion.”61 Although Louboutin presented substantial evidence of likelihood of
confusion, the district court failed to consider this issue after simply deciding that Louboutin’s
“Red-Sole Mark” did not merit protection.62
E. Dilution
The fame of the “Red-Sole Mark” supports Louboutin’s original infringement claim for
dilution. Undisputed evidence provided by Louboutin proves that the mark has become widely
recognized by the general public, that there is a strong retail and advertising presence, and
61
62
Plaintiffs’ Reply Memorandum of Law, supra note 3, at 5.
Christian Louboutin S.A., 778 F. Supp. 2d at 457.
12
extensive media coverage.63 Because Louboutin’s “Red-Sole Mark” is famous, it qualifies for
protection under a federal dilution claim.64 There are six factors to consider when determining
whether there is dilution by blurring: (1) the degree of similarity between the mark or trade name
and the famous mark, (2) the degree of inherent or acquired distinctiveness of the famous mark,
(3) the extent to which the owner of the famous mark is engaging in substantially exclusive use
of the mark, (4) the degree of recognition of the famous mark, (5) whether the user of the mark
or trade name intended to create an association with the famous mark, and (6) any actual
association between the mark or trade name and the famous mark.65
YSL’s use of a red outsole constitutes blurring because it impairs the distinctiveness of
Louboutin’s “Red-Sole Mark.” Louboutin’s famous “Red-Sole Mark” and YSL’s infringing
mark are identical as they are both a distinct shade of red on the outsole of high end women’s
footwear. Louboutin has shown substantial evidence of distinctiveness and has a valid trademark
registration for the “Red-Sole Mark.” Louboutin engaged in substantially exclusive use of the
“Red-Sole Mark” for over nineteen years and during that time became a household name because
of the distinct and immediately recognizable “Red-Sole Mark.” As a shoe manufacturer, YSL
was assuredly aware that an association would be made between the two marks and, more likely,
that consumer confusion would be likely to happen because of the proximity of the two high end
footwear designs. Finally, Louboutin proved with survey evidence that consumers were
associating YSL’s red-soled shoe with the Louboutin brand because of the red soles. The
evidence in favor of Louboutin regarding the dilution claim speaks directly to the likelihood of
success on the merits in the infringement suit. Thus, even if the district court had not been
63
Plaintiffs’ Reply Memorandum of Law, supra note 3, at 5.
Id. at 6. The court did not undertake an analysis of the dilution claim because it found that the “Red-Sole Mark”
did not warrant protection. Christian Louboutin S.A., 778 F. Supp. 2d at 457.
65
Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 105, 106 (2d Cir. 2009).
64
13
sufficiently convinced of Louboutin’s likelihood of success on the merits, Louboutin presented
serious questions going to the merits of its claims and the district court should have undergone
further inquiry in order to protect the interests of both parties pending further litigation.
VI. Creating a Color War
A. Painting with a Full Palette
The district court explained its position on Louboutin and YSL’s dispute by comparing
the two designers to classic painters. The court rationalized that Louboutin’s registration of the
“Red Sole Mark” allowed the designer to claim ownership over the red sole to the detriment of
competitors, which would be like forbidding Monet from using a specific shade of blue in his
Water Lilies series because Picasso had used it first in paintings from his Blue Period.66 From a
lay perspective, the district court’s analysis and subsequent decision might seem fair. Artists,
whether painter or designer, need a full palette from which to create. Limiting their artistic
freedom by allowing other artists to appropriate a specific shade on the color spectrum would
unduly hinder imagination, competition, and creation. However, when the district court extended
this principle from high art to the high fashion industry and adopted a per se rule that a single
color can never constitute a protectable trademark when used on any fashion item, it failed to
consider the special circumstances of Louboutin’s “Red-Sole Mark.” In doing so, the district
court relied upon an illogical analogy between art and industry which simply does not have
justification in statute or trademark jurisprudence.
Contrary to what the district court seemingly holds, the “Red-Sole Mark” protects a
specific color of red outsole on women’s shoes, but does not keep competitors from using a
broad spectrum of other colors on their outsoles, or even using Louboutin’s red color on other
parts of the shoe. The importance of Louboutin’s red sole in identifying the shoe’s source cannot
66
Christian Louboutin S.A., 778 F. Supp. 2d at 451.
14
be overlooked and the history of the mark coupled with the very narrow protection it allows for
differentiates it from the court’s comparison to Picasso’s use of the color blue. A painting which
makes use of a specific color of blue does not immediately signify that it is a Picasso;
conversely, the particular Louboutin shade of red on a particular part of woman’s shoe clearly
identifies it as a Louboutin. Contending that creativity will be hindered by disallowing other
designers from using the exact shade of red in the same manner and place as Louboutin assumes
that such designers have little creativity to hinder in the first place.
In addition, federal and common law have allowed trademark protection of single color
marks.67 Such laws should have been given far more weight than the court’s hypothetical
analogy. The district court’s analysis and blanket prohibition on protection for single color marks
in fashion exceeded the scope of the issues before the court. Even then, the artistic nature of the
fashion industry does not bar trademark protection for fashion designers regardless of the court’s
analogous view of fashion and art.
The district court nevertheless acknowledged single color trademark protection in
industrial goods, but posited that the purpose of that protection does not fit the “unique
characteristics and needs – the creativity, aesthetics, taste, and seasonal change, that define
production of articles of fashion.”68 The district court explained that a distinction exists between
industrial markets and fashion because, in industrial markets, the design, shape, and general
composition of the goods are relatively uniform and color can be used solely as a sourceidentifying feature.69 However, in fashion markets, although color can be used as a source
identifier, it is primarily used to advance expressive ornamental and aesthetic purposes.70 Like
67
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 (1995).
Christian Louboutin S.A., 778 F. Supp. 2d at 451.
69
Id.
70
Id. (emphasis added).
68
15
the court’s analogy to art, this explanation is inconsistent with the Lanham Act and controlling
case law, as color marks have been valid and registerable regardless of the industry.71
The district court recognized that the use of color in a trademark within a distinct pattern
or combination of shades has been protected when the use of color manifests a conscious effort
to design a uniquely identifiable mark embedded in the goods.72 These cases are meant to apply
to the arrangement of colors creating a distinct and recognizable image on fashion items, not to
single and specific shades. The issue of single color marks in the fashion industry is one of first
impression; yet, the rule of law created in other fashion color mark cases can and should be
considered when examining Louboutin’s “Red-Sole Mark.” Like Louis Vuitton Mallerier’s
pattern of brightly colored “LV” monograms and Burberry’s distinctive white, red, beige, and
black plaid pattern, Louboutin’s red sole is purposely intended to be a source identifier as well as
an expressive and decorative design. While a single color mark should not always be registerable
in the fashion industry, Louboutin’s red outsole is just as distinctive as Burberry’s plaid pattern
and identifies the source of the product just as clearly. Protection of Louboutin’s famous “RedSole Mark” is unlikely to cause a wave of designers attempting to take ownership of every color
in the spectrum. Yet, even if it did, the United States Patent and Trademark Office reviews every
application for trademark protection based upon trademark law articulated in the Lanham Act
and case law. Louboutin’s “Red-Sole Mark” was protected only after showing years of
substantially exclusive use and the establishment of secondary meaning.
Just like Louboutin’s shoes, this case is distinctive. If, on rare occasion, a designer’s
nonfunctional color mark becomes famous and consumers connect that specific color in that
specific design to one particular brand, that designer should have the ability to protect that source
71
72
Qualitex Co., 514 U.S. at 163.
Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 116 (2d Cir. 2006).
16
identifier and the accompanying goodwill. Creating a per se rule prohibiting single color marks
in the fashion industry is not the proper way to evaluate these trademark issues. Instead, a caseby-case analysis is necessary to protect those using color marks in their businesses that are
successful enough to acquire distinctiveness.
B. Protecting Fashion’s Signature Color Marks
Trademark protection under the Lanham Act is intended to protect against consumer
confusion regarding the source of goods or services in the marketplace and to encourage
businesses to maintain the quality of their goods or services by protecting the goodwill they have
developed with their trademarks. These safeguards are essential to fair business practices in any
market, including fashion. Because of the fashion industry’s ever-changing artistic, ornamental,
and aesthetic nature, only the most unique, prominent, and enduring single color trademarks
would even be eligible for registration. It is only those widely-known and long lasting single
color marks, like the “Red-Sole Mark,” that deserve trademark protection.
Like Louboutin, Tiffany has created and utilized a widely-known single color trademark.
After using the same color mark since 1837, Tiffany registered its distinctive shade of blue with
the United States Patent and Trademark Office in 1998 and received both a trademark and
service mark registration for the robin’s-egg blue color, as used on boxes, shopping bags, and the
covers of catalogs.73 That specific shade of blue is often referred to as “Tiffany blue” and has
been given its own Pantone number on the Pantone Matching System.74,75 Like Louboutin’s red
soles, consumers are able to instantly associate the well known blue color with the Tiffany brand.
73
Tiffany Blue: A Color of Distinction, supra note 22.
Id.
75
The Pantone Matching System is a standardized color matching system and is known worldwide as the standard
language for color communication from designer to manufacturer to retailer to customer. About Us: What We Do,
PANTONE, http://www.pantone.com/pages/pantone/pantone.aspx?pg=19295&ca=10 (last accessed May 19, 2012).
74
17
The district court’s broad declaration that single color marks cannot be protected in the
fashion industry prompted Tiffany to file an amicus curiae brief to the United States Court of
Appeals for the Second Circuit in support of Louboutin’s appeal seeking reversal of the district
court’s ruling. Tiffany argued that the district court adopted a sweeping and unprecedented per
se rule against granting trademark protection to any single color that is used on any “fashion
item,” even where the color has achieved secondary meaning and is associated with a single
brand.76 In its brief, Tiffany asked the Second Circuit to reject the district court’s adoption of this
sweeping per se rule concerning the protectability and functionality of single colors in the
fashion industry and instead reaffirm the Supreme Court and Second Circuit standard of
evaluating secondary meaning and functionality on a case-by-case basis.77 Tiffany argued that, in
conducting its analysis of whether Louboutin’s “Red-Sole Mark” was a valid trademark, the
district court failed to apply the correct legal standards.78 In doing so, the court primarily erred
when it looked at the “fashion world” generally and adopted a per se rule that a single color can
never constitute a protectable trademark when used on any article of wear produced in the
fashion industry.79 This ruling was overbroad, inconsistent with the Lanham Act and common
law, and was unnecessary to decide the issue of the preliminary injunction. In conducting its
analysis of whether Louboutin’s mark was functional, the district court failed to apply the correct
legal standards and again relied on generalities about the “fashion industry” to analyze whether
the use of a single color is “functional” when used on fashion items.
76
Brief of Amicus Curiae Tiffany (NJ) LLC and Tiffany and Company in Support of Appellants’ Appeal Seeking
Reversal of the District court’s Decision Denying Appellants’ Motion for Preliminary Injunction at 10, Christian
Louboutin S.A., 778 F. Supp. 2d 445 (No. 11 Civ. 2381 (VM)).
77
Id.
78
Id.
79
Id.
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V. Implications
The district court’s denial of Louboutin’s preliminary injunction and its allusion to
cancellation of the mark in the future has put Louboutin’s “Red-Sole Mark” in jeopardy
regardless of the decision on appeal. The decision has left YSL and third party shoemakers free
to dilute the market with red-soled shoes pending the outcome of Louboutin’s case, leaving the
designer unprotected from infringement on its famous “Red-Sole Mark.” Louboutin’s business
was built on its red-soled shoes, which have become an integral part of the Louboutin brand.
Only after nineteen years of use and public recognition of the red sole’s exclusive association to
the Louboutin brand was protection merited. If YSL and other competitors are free to use red
soles on their shoes, then the most distinctive and recognizable design component of Louboutin's
brand, one which clearly identifies Louboutin as the source of the shoes, is in serious jeopardy.
Even if Louboutin prevails on appeal, the production and sale of red-soled shoes by high end
competitors and mid-range companies allowed by the district court’s decision will have already
caused substantial consumer confusion. The inability to preserve its reputation if red-soled
imitations flood the market could potentially devastate the Louboutin brand.
Although the district court pointed to the changeable nature of the fashion industry when
creating this rule, all industries are subject to changes in taste of both designers and consumers.
As a result, this restriction could easily be applied to every conceivable type of business. The
inevitable expansion to other industries would quickly destroy legal precedent in the field of
color marks, essentially prohibiting single color trademarks completely. Not only would fashion
entities like Louboutin and Tiffany lose their trademark protection, so would companies in other
industries like UPS, Qualitex, and many others that rely on a specific color as part of their
19
business. Affirming the district court’s decision would result in a tremendous shift in the world
of trademark protection, making it virtually impossible for a company to benefit from the
goodwill that their color choice has made by protecting against copyists. The resulting consumer
confusion would have a significant negative effect on the marketing and sales of their brands.
The outcome of Louboutin’s case may also alter the functionality doctrine as it currently
stands. A color mark is considered to have utilitarian functionality if it “is essential to the use or
purpose of the product” or if it “affects the cost or quality of the product.”80 If the case is
affirmed, all single color marks with any utilitarian appeal will be deemed functional, as the
district court adopted a per se rule that the use of a single color for fashion items is per se
essential to the use and purpose of fashion, and, thus, is per se functional. Any color mark either
decreasing or increasing the cost of the design in any way would also create an inference of
functionality, regardless of precedent holding that a design feature affecting the cost or quality of
an article is considered one “which permits the article to be manufactured at a lower cost.”81
If the district court’s decision is affirmed, the test for aesthetic functionality will be
altered as well. The use of single color marks in fashion will be per se aesthetically functional
because designers need to use the full color palette due to the changing nature of designers and
consumers. Not only did the district court create its own rules regarding functionality, it failed to
fully analyze and consider the controlling case law in this area. Furthermore, the rules the district
court adopted in regards to functionality can once again be expanded to single color trademarks
across all industries, abolishing the functionality doctrine and putting in its place unclear and
overly broad rules. The district court’s decision has created confusing and expansive new rules
that are entirely inconsistent with the Lanham Act and trademark precedent. If the Second
80
81
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 (1995).
Id.
20
Circuit was to affirm the district court’s decision as a whole, every single color trademark owner
in every industry would be at serious risk of losing their trademark protection due to the farreaching implications of the district court’s adopted rules.
If the Second Circuit does not affirm the district court’s decision, but does agree that the
“Red-Sole Mark” should be cancelled, there would still be serious implications for other single
color trademark holders in the fashion industry. The cancellation of Louboutin’s mark may limit
the ability of other designers to register and enforce rights for single color marks in any fashion
item. Cancellation could also seriously weaken single color trademarks in the fashion industry by
creating a procession of infringers and subsequent court actions where the Louboutin
cancellation is used as evidence that single color marks in fashion are invalid and unprotectable.
While the Second Circuit’s analysis could find that Louboutin’s “Red-Sole Mark” is invalid for
many different reasons, the cancellation of the mark could be used to support the subsequent
cancellation of marks in similar situations. If the Second Circuit found cancellation appropriate
because Louboutin’s mark did not merit protection, this case would provide support for others
requesting cancellation of a mark for lack of secondary meaning or nonfunctionality. Likewise, if
the Second Circuit found cancellation appropriate because YSL’s use of the similar mark was not
likely to cause consumer confusion, it would provide support for others requesting cancellation
of a mark for lack of consumer confusion.
The cancellation of the “Red-Sole Mark” and third party competitors’ use of red soles on
their designs would be devastating for Louboutin’s brand because they are almost as
recognizable as the designer’s name. If the “Red-Sole Mark” was cancelled, Louboutin would be
helpless in keeping YSL and other competitors from using a red sole on their designs. While
Louboutin could still use the red sole on its own designs, the market would be so diluted with
21
red-soled shoes that the Louboutin brand would no longer be distinctive or recognizable by
appearance. The resulting consumer confusion will render Louboutin’s “Red-Sole Mark”
meaningless. Cancellation of the mark would seriously affect Louboutin’s ability to distinguish
itself from other high fashion, mid-priced, or low-priced footwear, inevitably making
Louboutin’s high-end customers indistinguishable from those who paid far less for a similar redsoled shoe. Instant recognition of the cost and quality of Louboutin shoes is important to this
target market because the red-soled shoes have become a symbol of status for customers.
Cancellation of the mark would result in loss of that status symbol and inevitable loss of
customers.
If the Second Circuit overturns the district court’s decision, it may have equally broad
implications for the future of color marks in fashion and other industries. A reversal, and
subsequent validation of Louboutin’s mark, would establish a favorable precedent for other
designers seeking to register or enforce rights for single color marks in fashion design. Tiffany
and other single color mark holders in the fashion industry could be certain that the district
court’s overly broad and confusing rules would not be considered controlling law and a case-bycase analysis of trademark claims would be reinstated. Louboutin’s victory on appeal would also
be a favorable indication that its color mark is valid and protectable, bolstering its ability to
police for infringement and enforce its trademark rights. Depending on whether or not the
Second Circuit decides to approve the preliminary injunction, a reversal could potentially bar
YSL and other competitors from using the color red on the soles of women’s shoes. Even if the
Second Circuit did not enjoin YSL’s use of red soles on their designs, a reversal is an indicator to
YSL and third party competitors that they should not yet begin mass production of red-soled
shoes, as infringement claims would be likely.
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IV. Conclusion
The Second Circuit’s decision on appeal has the potential to endorse or negate single
color trademarks across the board. Affirming the district court’s decision would significantly
alter the rules for functionality analysis in fashion, essentially abolishing the functionality
doctrine and putting in its place unclear and overly broad rules, which could quickly spread to
color trademark cases in other industries. The district court’s argument for the fashion industry’s
need for a full palette of colors could be adopted by other industries as well, potentially causing
widespread cancellation of single color marks in every industry. Reversing the district court’s
decision would strengthen single color marks in fashion and all other industries and would allow
designers to register and enforce their rights to protect their mark.
It seems clear that the district court erred in its analysis of Louboutin’s “Red-Sole Mark”
and exercised far too much discretion in reaching a decision that ignored both the Lanham Act
and controlling precedent in trademark law. Whether or not the “Red-Sole Mark” retains
trademark protection, it is unlikely that the district court’s per se rules regarding single color
marks in fashion will stand. Without the district court’s overly broad edict that single color
marks are not protectable in fashion items, Louboutin has a strong claim for exclusive use of its
“Red-Sole Mark”. After all, “that a trademark is desirable does not... render it unprotectable,”
regardless of the industry.82
82
Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co, 550 F.3d 465, 488 (5th Cir.
2008).
23